Krig, Scott et al.Download PDFPatent Trials and Appeals BoardMar 30, 202013977293 - (D) (P.T.A.B. Mar. 30, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/977,293 11/15/2013 Scott Krig 884.K12US1 7231 45457 7590 03/30/2020 SCHWEGMAN LUNDBERG & WOESSNER/Intel P.O. Box 2938 MINNEAPOLIS, MN 55402 EXAMINER WEISENFELD, ARYAN E ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 03/30/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT KRIG, MADAN VENUGONAL, and VISHWA HASSAN ____________ Appeal 2019-002444 Application 13/977,293 Technology Center 3600 ____________ Before JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–7, 9–17, 19–27, and 29–33, which constitute all pending claims. Appeal Br. 39–46 (Claims App.). Appellant has canceled claims 8, 18, and 28. Appellant’s Preliminary Amendment 4, 7, 10 (filed June 28, 2013). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Intel Corporation as the real party in interest. Appeal Br. 2. 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed September 26, 2018, “Appeal Br.”), the Appeal 2019-002444 Application 13/977,293 2 STATEMENT OF THE CASE The claims relate to a product management service that receives information on products purchased by consumers, associates such information with consumer accounts, and automatically manages consumer obligations, such as rebates and warranties, with respect to products. Spec. ¶ 12. Invention Claims 1, 11, and 21 are independent. Claim 1 is illustrative and is reproduced below. 1. A system for providing a product management service, the system comprising: a network-reachable product management service comprising a processor configured to at least: receive from a point of sale terminal, over a network, product and consumer information as part of a sale of a product described by the product information, the consumer information received by the point of sale terminal from a Radio Frequency Identification (RFID) device of the consumer; associate the consumer information with a consumer account; update the consumer account with the product information responsive to associating the consumer information with the consumer account using a computer processor; request, over a network, warranty registration requirements from a warranty registration service; receive warranty registration requirements from the warranty registration service, the warranty registration Reply Brief (filed February 4, 2019, “Reply Br.”), the Examiner’s Answer (mailed December 13, 2018, “Ans.”), the Non-Final Office Action (mailed February 26, 2018, “Non-Final”), and the Specification (filed June 28, 2013, “Spec.”) for their respective details. Appeal 2019-002444 Application 13/977,293 3 requirements detailing product information and consumer information to register the product; select a portion of the product information and a portion of the consumer information that meets the warranty registration requirements; send a product registration request including the portion of the product information and the portion of the consumer information over the network to a warranty registration service to register the product described by the product information for a product warranty; receive a confirmation that the product warranty was registered; determine, via communications over the network with a rebate service, that a rebate is applicable to the product information and responsive to determining that the rebate is applicable to the product information, sending at least a portion of the product information and at least a portion of the consumer information over the network to the rebate service to apply for the rebate; receive a confirmation from the rebate service that the rebate was processed successfully; set a follow-up reminder responsive to receiving the confirmation from the rebate service; check a status of the rebate by communicating over the network with the rebate service on expiry of the follow-up reminder; and notify a consumer associated with the consumer account of the status of the rebate responsive to checking the status of the rebate. Appeal Br. 39–40 (Claims App.). References and Rejections The Examiner rejected Claims 1, 11, and 21 under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim Appeal 2019-002444 Application 13/977,293 4 the subject matter which the inventor or a joint inventor regards as the invention. Non-Final 8–9. The Examiner rejected Claims 1–7, 9–17, 19–27, and 29–33 under 35 U.S.C. § 101 as directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Id. at 3–8. The Examiner rejected Claims 1–7, 9–17, 19–27, and 29–33 under 35 U.S.C. § 103 as being unpatentable over Abreu (US 2010/0145730 A1; June 10, 2010), Levy et al. (US 2013/0066698 A1; Mar. 14, 2013) (“Levy”), Milovanovic (US 2002/0035608 A1; Mar. 21, 2002), and Press Release, Texas Instruments, Mobil’s Speedpass Makes Pumping Easier and Quicker with New Technology at the Gas Pump (Mar. 1997) (“Mobil’s SpeedPass”). Id. at 9–24. ANALYSIS In making our decision, we have reviewed the rejections of claims 1– 7, 9–17, 19–27, and 29–33 and considered Appellant’s arguments. We have considered only those arguments Appellant actually raised in the Briefs. Appellant has waived any argument they could have made but chose not to in the Briefs. See 37 C.F.R. § 41.37(c)(1)(iv). CLAIMS 1, 11, AND 21: INDEFINITENESS. The Examiner determines that claims 1, 11, and 21 are indefinite because “the first limitation recites that the consumer information is received from an RFID device, however, based on the way it is claimed, it is unclear whether the RFID device is part of the system.” Non–Final 9. Appellant argues that “the claim is clear as it does not recite the RFID device of the consumer as part of the system of claim 1,” but “[r]ather, it specifically Appeal 2019-002444 Application 13/977,293 5 recites that the POS device receives the information from an RFID device of the consumer.” Appeal Br. 22–23 (emphasis omitted). Appellant explains that “[i]n order to receive this information the point of sale terminal must read the RFID device of the consumer.” We agree with Appellant. A person of ordinary skill in the computer arts would understand from a plain reading of the claim that the “RFID device” is not part of the claimed system itself but rather an external device from which the recited POS terminal receives data. The Examiner determines that claims 1, 11, and 21 are indefinite for another reason as well—“because there is no clear tie between the limitations that relate to a rebate service and the limitations that relate to a warranty registration service.” Non-Final 9. The Examiner explains that “[t]hese limitations are completely separate and distinct and have absolutely no tie to each other. The warranty registration service limitations do not mention anything about rebate services, nor do the rebate services discuss warranty registrations.” Id. Appellant argues that “one of ordinary skill, looking at the claim in light of the specification would clearly understand what is covered by the claims.” Appeal Br. 24. Appellant explains that “[t]he product information and customer information received from the POS device is sent both to a product registration service to register the product and separately to a rebate service to check for rebates and apply for a rebate if one is available.” Id. We agree with Appellant. Although the warranty registration service and rebate service limitations describe different features, a person of ordinary skill in the computer arts would understand from a plain reading of the claim that each of these features may be implemented as part of Appeal 2019-002444 Application 13/977,293 6 Appellant’s overall system. Moreover, contrary to the Examiner’s position, the warranty registration service and rebate service limitations are tied at least because both use the same customer information and product information received from the POS device in order to make determinations. And even if the two services were not tied as such, “it is not essential to a patentable combination that there be interdependency between the elements of the claimed device or that all the elements operate concurrently toward the desired result.” Ex parte Nolden, 149 USPQ 378, 380 (BPAI 1965). In other words, “[a] claim does not necessarily fail to comply with 35 U.S.C. 112, second paragraph where the various elements do not function simultaneously, are not directly functionally related, do not directly intercooperate, and/or serve independent purposes.” MPEP 2172.01 (citing Ex parte Huber, 148 USPQ 447, 448–49 (BPAI 1965)). In view of the foregoing, we decline to sustain the rejection of claims 1, 11, and 21 under 35 U.S.C. § 112(b). CLAIMS 1–7, 9–17, 19–27, AND 29–33: INELIGIBLE SUBJECT MATTER. Appellant argues these claims as a group. Appeal Br. 11–22; Reply Br. 3–7. Therefore, we decide the appeal of the § 101 rejection of claims 1– 7, 9–17, 19–27, and 29–33 with reference to illustrative claim 13 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1162 (Fed. Cir. 2018). We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn 3 Our § 101 analysis for claim 1 applies equally to claims 2–7, 9–17, 19–27, and 29–33, which are not argued separately with particularity. Appeal 2019-002444 Application 13/977,293 7 to patent-eligible subject matter is an issue of law that we review de novo.”). Based on our review of the record in light of recent policy guidance on patent subject matter eligibility under 35 U.S.C. § 101,4 we sustain the § 101 rejection of claims 1–7, 9–17, 19–27, and 29–33 for the specific reasons discussed below. 35 U.S.C. § 101 Section 101 provides that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has long recognized, however, that § 101 implicitly excludes “[l]aws of nature, natural phenomena, and abstract ideas” from the realm of patent-eligible subject matter, as monopolization of these “basic tools of scientific and technological work” would stifle the very innovation that the patent system aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450 U.S. 175, 185 (1981). Under the mandatory Revised Guidance, we reconsider whether Appellant’s claims recite: 1. any judicial exceptions, including certain groupings of abstract ideas 4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance” or “Rev. Guid.”); see also USPTO, October 2019 Patent Eligibility Guidance Update (Oct. 17, 2019), https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf. Appeal 2019-002444 Application 13/977,293 8 (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes), and 2. additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim, (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then reach the issue of whether the claim: 3. adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 4. simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. A. Whether the claims recite a judicial exception. The Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract-idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se): (a) mathematical concepts,5 i.e., mathematical relationships, mathematical 5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . . reduced to a mathematical formula . . . is an unpatentable abstract idea.”). Appeal 2019-002444 Application 13/977,293 9 formulas, equations,6 and mathematical calculations7; (b) certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)8; and (c) mental processes—concepts performed in the human mind (including observation, evaluation, judgment, opinion).9 The preamble of independent claim 1 recites: “A system for providing a product management service, the system comprising.” The limitations recited in the body of the claim are analyzed in Table I against the categories of abstract ideas as set forth in the Revised Guidance. 6 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded the protection of our patent laws”); Parker v. Flook, 437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application.”). 7 SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical calculations based on selected information” are directed to abstract ideas). 8 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate settlement risk is a “fundamental economic practice” and thus an abstract idea); see Revised Guidance, at 52 n.13 for a more extensive listing of “certain methods of organizing human activity” that have been found to be abstract ideas. 9 Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’” (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972))). Appeal 2019-002444 Application 13/977,293 10 Claim 1 Revised Guidance [a]10 receive . . . product and consumer information as part of a sale of a product described by the product information, the consumer information received by . . . the consumer; Insignificant extra-solution activity, e.g., mere data-gathering. Rev. Guid., 84 Fed. Reg. at 55 n.31. [b] associate the consumer information with a consumer account; Mental processes—concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgment, opinion). Id. at 52. [c] update the consumer account with the product information responsive to associating the consumer information with the consumer account . . . ; Mental processes—concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgment, opinion). Id. [d] request . . . warranty registration requirements . . . ; Insignificant extra-solution activity, e.g., mere data-gathering. Id. at 55 n.31. [e] receive warranty registration requirements . . . , the warranty registration requirements detailing product information and consumer information to register the product; Insignificant extra-solution activity, e.g., mere data-gathering. Id. [f] select a portion of the product information and a portion of the consumer information that meets the warranty registration requirements; Mental processes—concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgment, opinion). Id. at 52. [g1] send a product registration request including the portion of the product information and the portion of the consumer information . . . Insignificant extra-solution activity, e.g., mere data-gathering. Id. at 55 n.31. 10 Step designators, e.g., “[a],” are added to facilitate discussion. Appeal 2019-002444 Application 13/977,293 11 [g2] to register the product described by the product information for a product warranty; Mental processes—concepts performed in the human mind or with pen and paper (including an observation, evaluation, judgment, opinion). Id. at 52. [h] receive a confirmation that the product warranty was registered; Insignificant extra-solution activity, e.g., post-solution activity. Id. at 55 n.31. [i1] determine . . . that a rebate is applicable to the product information and Certain methods of organizing human activity— managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Id. at 52. [i2] responsive to determining that the rebate is applicable to the product information, sending at least a portion of the product information and at least a portion of the consumer information; Insignificant extra-solution activity, e.g., mere data-gathering. Id. at 55 n.31. [i3] to apply for the rebate; Certain methods of organizing human activity— managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Id. at 52. [j] receive a confirmation . . . that the rebate was processed successfully; Insignificant extra-solution activity, e.g., post-solution activity. Id. at 55 n.31. [k] set a follow-up reminder responsive to receiving the confirmation . . . ; Certain methods of organizing human activity— managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Id. at 52. Appeal 2019-002444 Application 13/977,293 12 [l] check a status of the rebate . . . on expiry of the follow-up reminder; and Certain methods of organizing human activity— managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Id. [m] notify a consumer associated with the consumer account of the status of the rebate responsive to checking the status of the rebate. Certain methods of organizing human activity— managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Id. In view of Table I, limitations [a]–[c] of claim 1 recite the concept of managing customer and product information by collecting, comparing, and storing certain data, which is an abstract idea in the mental processes grouping; limitations [d]–[h] of claim 1 recite the concept of registering a warranty for a product by collecting data, recognizing certain data therefrom, and taking action with respect to the recognized data, which is also an abstract idea in the mental processes grouping; and limitations [i]– [m] recite the concept of applying for and managing the status of a rebate associated with the purchase of the product, which is an abstract idea in the certain methods of organizing human activity grouping. See, e.g., Spec. ¶¶ 20, 69 (describing the above concepts as features of Appellant’s product management service). Appellant argues that the claims “recite technological solutions to a number of different technical problems,” including “an integrated management solution in the form of a computerized product management service to offer a consumer a single point of contact for computerized warranty protection services, product status services, rebate services, special Appeal 2019-002444 Application 13/977,293 13 offer services, and other services related to a purchased product.” Appeal Br. 16. According to Appellant, “this solution allows consumers to bypass individually interfacing with each system and avoids time consuming rebate forms, product registration forms, and the like,” and “avoids having different information on each of the aforementioned services (e.g., from errors in data entry by the consumer who may have to otherwise separately enter in all the required information).” Id. at 17. We are not persuaded by Appellant’s argument. First, the notion of a one-stop shop for all your product needs (including purchasing a product, product warranties, rebates, and other product information) is hardly a new one, as retail department stores in existence long before the Internet (e.g., Macy’s, Sears) have strived to provide such services to consumers in an integrated manner. Second, to the extent claim 1’s use of computing elements facilitates or speeds-up a consumer’s experience, “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).11 Appellant further argues that the claims do not recite an abstract idea in the mental processes grouping because the recited operations are 11 See also Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); Alice, 573 U.S. at 224 (concluding that “the use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” was not an inventive concept). Appeal 2019-002444 Application 13/977,293 14 performed using computing elements such as a network-reachable product management service comprising a processor, a Radio Frequency Identification (RFID) device, a point of sale terminal, a network, a computer processor, a warranty registration service, and a rebate service. Reply Br. 4– 6. We are not persuaded by this argument because we find no evidence that claim 1 cannot practically be performed in the human mind (or manually with pen and paper) but for the recitation of these generic computer components. See Rev. Guid., 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). Likewise, the performance of claim 1 using generic computer components does not preclude claim limitations [i]–[m] from being in the certain methods of organizing human activity grouping. Id. Appellant also argues that the Examiner’s analysis overgeneralizes, and is untethered from, the claims, in violation of Federal Circuit precedent. Appeal Br. 13–15. Appellant additionally argues that the subject matter in the SmartGene12 and Classen13 cases cited by the Examiner (see Non-Final 6; Ans. 5) are not similar to claims at issue here. Appeal Br. 15–16. We are not persuaded by these arguments. As discussed above, we review the Examiner’s § 101 rejection de novo in light of the Revised Guidance. Accordingly, such alleged 12 Smart Gene v. Advanced Biological Laboratories, SA, 555 Fed. App’x 950 (Fed. Cir. 2014). 13 Classen Immunotherapies v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). Appeal 2019-002444 Application 13/977,293 15 deficiencies in the Examiner’s analysis do not guide our decision whether the claims are patent-eligible under 35 U.S.C. § 101. And even if Appellant were correct that SmartGene and Classen differ from Appellant’s claims, there are many other Federal Circuit cases that identify abstract ideas similar to the concepts recited in claim 1. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within the collected data set, and . . . storing that recognized data”); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (“generating tasks [based on] rules . . . to be completed upon the occurrence of an event”).14 In view of the foregoing, we determine that claim 1 recites a judicial exception, per se. To the extent that claim 1 recites multiple abstract ideas, we note that “[a]dding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims recite a patent-ineligible concept, as we determine above, we proceed to Step 2A(ii), where we determine whether the recited judicial 14 See also, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“obtain and compare intangible data pertinent to business risks”); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (“collection, storage, and recognition of data”); FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (“collecting and analyzing information to detect misuse and notifying a user when misuse is detected”). Appeal 2019-002444 Application 13/977,293 16 exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. For the following reasons, we determine that Appellant’s claims do not integrate the judicial exception into a practical application. MPEP § 2106.05(a) “Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field.” “In determining patent eligibility, examiners should consider whether the claim ‘purport(s) to improve the functioning of the computer itself’” or “any other technology or technical field.” MPEP § 2106.05(a). Appellant asserts that “[l]ike Amdocs, the present case entails an unconventional technological solution (the addition of a computerized process to manage decentralized product data) to a technological problem (decentralized product data),” and “the claims . . . are tied to specific structures of various components . . . : namely . . . a network-reachable product management service comprising a processor[,] . . . [a] point of sale terminal[,] . . . a Radio Frequency Identification (RFID) device[,] . . . [and] a warranty registration service (reachable over the network).” Appeal Br. 20– 21 (citing Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)). But Appellant does not identify—nor do we find—any persuasive evidence in the claims or Specification to support these assertions. Amdocs “entail[ed] an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem Appeal 2019-002444 Application 13/977,293 17 (massive record flows which previously required massive databases)” with claims “tied to a specific structure of various components (network devices, gatherers, ISMs, a central event manager, a central database, a user interface server, and terminals or clients)” such that the components were “purposefully arrange[d] . . . in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks.” Amdocs, 841 F.3d at 1300–1301. By contrast, claim 1 recites a plurality of generic computing elements for performing generic functions, such as sending, receiving, and determining data using various computing devices over a network in the context of registering a product for a product warranty and managing the status of a rebate for purchasing the product. We find that such generic recitations of computing elements fail to transform the recited patent-ineligible concept into an eligible one. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components, such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). Furthermore, the Specification also describes these computing elements and functions in no more than generic terms. See, e.g., Spec. ¶¶ 48–64, Figs. 1, 8, 9. Appellant next argues “the claims go even further, by solving the additional problems of: entering customer information at a retail POS system (e.g., slowness) by utilizing RFID information that identifies the customer, and the problems associated with applying for a rebate (no status Appeal 2019-002444 Application 13/977,293 18 information).” Id. at 21. This argument is not persuasive. First, even if claim 1’s use of radio frequency identification (“RFID”) were to quicken the underlying process, this alone is insufficient to render the claim patent-eligible. See, e.g., OIP Techs., 788 F.3d at 1363; Bancorp Servs., 687 F.3d at 1278; Alice, 573 U.S. at 224. Second, Appellant presents no persuasive evidence that the alleged problems associated with applying for a rebate are in any way unique to or rooted in computer technology. To the contrary, it appears that these problems are rooted not in technology, but rather in the age-old need to manage and disseminate information effectively. See, e.g., Spec. ¶¶ 12, 26, 35, 73, 74, 82–84, 93–94. Appellant also argues that, like the claims in Amdocs, “the claims in the present application are narrowly drawn” and do not pre-empt, but rather go much further than “‘an idea of itself,’ ‘comparing new and stored information [and using rules to identify options],’ and ‘collecting and comparing known information.’” Appeal Br. 21. We are not persuaded by these arguments. Even though the limitations of claim 1 may be “narrowly drawn,” limiting an abstract idea to a particular field of use in this manner does not convert an otherwise ineligible concept into an inventive one. See Rev. Guid., 84 Fed. Reg. at 55, id. nn. 31–32. In other words, that the claimed invention may perform a specific set of rules that provides a novel or non-obvious result does not necessarily render the claim non-abstract. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (determining for a specific method of advertising and content distribution, that although “some of the eleven steps were not previously employed in this art,” that was “not enough—standing alone—to confer patent eligibility Appeal 2019-002444 Application 13/977,293 19 upon the claims at issue.”); accord Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 942 (N.D. Cal. 2015), aff’d 670 F. App’x 704 (Fed. Cir. 2016). And “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. . . . Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).15 MPEP § 2106.05(b) Particular Machine. The Bilski16 machine-or-transformation test is only applicable to method (process) claims on appeal in the present application. Although method claims 11–20 are computer-implemented using a plurality of computing elements, these claims do not recite a particular machine. Rather, the Specification describes the use of such computing elements in no more than generic terms as a tool for performing existing processes. See, e.g., Spec. ¶¶ 47, 52, 53, 57, 59, 64, 79, Fig. 9. “[A]dditional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception.” MPEP 2106.05(b)(II) (citing Versata Development Group v. SAP America, 793 F.3d 1306, 1335 (Fed. Cir. 2015)). MPEP § 2106.05(c) Particular Transformation. 15 See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract”). 16 Bilski v. Kappos, 561 U.S. 593 (2010). Appeal 2019-002444 Application 13/977,293 20 This section of the MPEP guides: “Another consideration when determining whether a claim recites significantly more is whether the claim effects a transformation or reduction of a particular article to a different state or thing.” “‘Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.’” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S. at 70). Appellant’s claims, which recite receiving, associating, updating, requesting, selecting, sending, determining, setting, checking, and notifying operations—do not effect a “transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter,” but instead merely create, transmit, store, manipulate or reorganize data. See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski, 561 U.S. at 593; see also CyberSource, 654 F.3d at 1375 (“The mere manipulation or reorganization of data . . . does not satisfy the transformation prong.”). Applying this guidance here, we determine Appellant’s claims fail to satisfy the transformation prong of the Bilski machine-or-transformation test. MPEP § 2106.05(e) Other Meaningful Limitations. This section of the MPEP guides: For a claim that is directed to a judicial exception to be patent-eligible, it must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception. The claim should add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment to transform the judicial exception into patent-eligible subject matter. Appeal 2019-002444 Application 13/977,293 21 See MPEP § 2106.05(e). “Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment” by reciting “additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time,” which “sufficiently limited the use of the mathematical equation to the practical application of molding rubber products.” MPEP 2106.05(e) (citing Diehr, 450 U.S. at 177–78, 184, 187. “In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk” because “the additional elements such as the data processing system and communications controllers . . . merely linked the use of the abstract idea to a particular technological environment (i.e., ‘implementation via computers’) or were well-understood, routine, conventional activity.” Id. (citing Alice, 573 U.S. at 226). We determine that claim 1 does not add “other meaningful limitations.” As discussed above, the recited computing elements are nothing more than generic components performing generic functions, which does not amount to a meaningful limitation that is significantly more than an abstract idea. MPEP § 2106.05(f) Mere Instructions to Apply an Exception. Appellant does not persuasively argue that their claims do any more than to merely invoke generic computer components merely as a tool in which the computer instructions apply the judicial exception. MPEP § 2106.05(g) Insignificant Extra-Solution Activity. Appeal 2019-002444 Application 13/977,293 22 The claims request, receive, and send data, which are classic examples of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963. MPEP § 2106.05(h) Field of Use and Technological Environment. “[T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity—such as identifying a relevant audience, a category of use, field of use, or technological environment.” Ultramercial, 722 F.3d at 1346. Here, although claim 1 relates to product management and is implemented using the recited computing elements, we determine that such recitations do no more than generally link the use of a judicial exception to a particular field of use or technological environment. See Rev. Guid., 84 Fed. Reg. 55. Appellant does not present any persuasive evidence otherwise. In view of the foregoing, we determine the claims are “directed to” a judicial exception. Step 2B: Does the Claim Provide an Inventive Concept? Because the claim has been determined to be directed to a judicial exception under revised Step 2A, we now evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). Rev. Guid., 84 Fed. Reg. at 56. It is indicative of the absence of an inventive concept where the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. Here, Appeal 2019-002444 Application 13/977,293 23 [w]hen considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. The processor is used in the invention in a conventional or expected manner. In most cases, the additional elements are applied merely to carry out data processing such as, making a determination, receiving data, setting reminders, checking status, and sending a notification, which fall under well-understood, routine, and conventional functions of generic computers. Therefore, the claimed interactions of the various generically recited devices lacks an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity, e.g., data comparison, determination, and output. Non-Final 8. The Examiner explains that “Applicants’ Specification discloses mere general purpose computing equipment for performing the steps of the invention (See, e.g., Page 20, paragraph [0060] which discloses examples of the computer system used to perform the steps of the invention, each being a generic device).” Id. We agree with the Examiner. Appellant’s disclosure describes the claimed computer system consistent with its being “well-understood, routine, [and] conventional,” at a high level of generality. See, e.g., Spec. ¶¶ 48–64, Figs. 1, 8, 9. For example, the Specification discloses that: “In example embodiments, one or more computer systems (e.g., a standalone, client or server computer system) or one or more processors, including processor, may be configured by software (e.g., an application or application portion) as a hardware-implemented module that operates to perform certain operations as described herein” (Spec. ¶ 48); Appeal 2019-002444 Application 13/977,293 24 “A hardware-implemented module may also comprise programmable logic or circuitry (e.g., as encompassed within a general-purpose processor or other programmable processor) that is temporarily configured by software to perform certain operations” (id. ¶ 49); “For example, where the hardware-implemented modules comprise a general-purpose processor configured using software, the general-purpose processor may be configured as respective different hardware-implemented modules at different times” (id. ¶ 50); and “The various operations of example methods described herein may be performed, at least partially, by one or more processors that are temporarily configured (e.g., by software) . . . to perform the relevant operations” (id. ¶ 52). Appellant’s reliance on Berkheimer as evidence of Examiner error is misplaced. Appeal Br. 18–20 (citing Berkheimer v. HP Inc., 882 F.3d 1360, 1369 (Fed. Cir. 2018)). The exemplary claim limitation at issue in Berkheimer was “storing a reconciled object structure in the archive without substantial redundancy,” which the court found was “directed to [an] arguably unconventional inventive concept described in the [S]pecification.” 881 F.3d at 1370. There was no evidence in the record that this limitation described well-understood, routine, and conventional technology. Id. at 1368. The court held there was a “genuine issue of material fact” and that “fact questions created by the [S]pecification’s disclosure” precluded summary judgment of invalidity under step two of the Alice/Mayo framework. Id. Here, by contrast, the Examiner has determined—and cited the Specification as evidence—that the additional technological limitations of claim 1 are merely generic and perform functions that are Appeal 2019-002444 Application 13/977,293 25 well-understood, routine, and conventional. And as discussed above, a complete review of the Specification amply supports such a determination. Therefore, because the additional elements of claim 1 recite only well-understood, routine, and conventional technology, specified at a high level of generality, we determine that claim 1, viewing its limitations “both individually and as an ordered combination,” does not recite significantly more than the judicial exception to transform the claim into patent-eligible subject matter. See Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79). In view of the foregoing, we sustain the rejection of claims 1–7, 9–17, 19–27, and 29–33 under 35 U.S.C. § 101. CLAIMS 1–7, 9–17, 19–27, AND 29–33: OBVIOUSNESS. Claim 1 recites, in relevant part, receive warranty registration requirements from the warranty registration service, the warranty registration requirements detailing product information and consumer information to register the product; select a portion of the product information and a portion of the consumer information that meets the warranty registration requirements; [and] send a product registration request including the portion of the product information and the portion of the consumer information over the network to a warranty registration service to register the product described by the product information for a product warranty. The Examiner cites Abreu’s process for determining whether a product has been recalled for teaching or suggesting these claim limitations. Non–Final 13–15, 19 (citing Abreu ¶¶ 189–91). The Examiner explains that “the registration requirements being specific to a warranty is simply non-functional descriptive labeling,” and that “the data identifying the type Appeal 2019-002444 Application 13/977,293 26 of registration service is simply a label for a registration service and adds little, if anything, to the claimed acts or steps and thus does not serve to distinguish over the prior art.” Id. at 13, 19. According to the Examiner, [a]ny differences relate[] merely to the meaning and information conveyed through labels (i.e., the warranty registration service) which does not explicitly alter or impact the steps of the method does not patentably distinguish the claimed invention from the prior art in terms of patentability. Whether the service is a recall registration service, as taught by Abreu, or warranty registration service, as claimed, the functional steps of the method are performed in the exact same way. The claimed warranty registration service represents descriptive information in that changing the claimed limitation to another value not claimed does not alter the outcome of the claimed method. Id. at 19; see also Ans. 9–11. Appellant contends the Examiner erred in determining that the term “warranty” as in “warranty registration service” is nonfunctional because the claim limitations at issue “make clear that the types of data and the messaging that is sent is [sic] important.” Appeal Br. 30. Appellant explains that “[t]he distinction [between the claim and Abreu] is not just one of the label ‘warranty’ vs. ‘recall’ – the distinction affects that [sic] electronic structural elements which impart a physical organization on the information stored in memory, in terms of both the messages and content of information sent.” Id. (internal citation and quotations omitted). Accordingly, Appellant argues the Examiner has not shown that Abreu’s disclosure of information and procedures to check a product for a recall satisfies claim 1’s recited steps for registering a warranty for a product. Id. at 31. Appellant explains that “differences between the registration of a product and checking for recalls and/or rebates imparts [sic] Appeal 2019-002444 Application 13/977,293 27 differences in how the computer would be programmed and thus the structure of the resulting computer.” Id. at 30. For example, according to Appellant, “different computing devices may be communicated with (e.g., see FIG. 1 product status service 1090 vs. warranty registration service 1060), different data may be sent, and the like.” Id. at 31. Appellant further explains that “the effect is different,” such that “[f]or a product recall, the end result is an affirmative or negative on whether the product is recalled,” whereas “[i]n a warranty registration system, the end result is a continuing legal obligation to provide warranty coverage for the purchaser.” Id. When determining a claim's patentability, the Board must read the claim as a whole, considering each and every claim limitation. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). A claim limitation is directed to printed matter “if it claims the content of information.” In re DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Courts have long held that if a limitation claims (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis. Id. at 1384–85. However, printed matter that is functionally related to an associated product in a new or nonobvious way deserves patentable weight. Id. at 1385–87; see also In re Lowry, 32 F.3d 1579, 1583–84 (Fed. Cir. 1994). As an initial matter, we agree with Appellant that the Examiner erred in determining that the term “warranty” did not deserve patentable weight. The type of registration requirements—i.e., “warranty”—does appear to be “content of information,” i.e., printed matter. But, when read in the context of the claim limitations at issue, the type of registration requirements are functionally related to Appellant’s claimed system and, thus, the term Appeal 2019-002444 Application 13/977,293 28 “warranty” deserves patentable weight. Claim 1’s network-reachable product management service is configured to register the product warranty based on particular portions of the product and consumer information that meet the warranty registration requirements received from the warranty registration service. In other words, the function of registering a product warranty and the specifics of that warranty depend on—and, thus, may change based on—the warranty registration requirements. Having determined the term “warranty” as recited deserves patentable weight, we agree with Appellant the Examiner erred in finding that Abreu’s disclosure of information and procedures to check a product for a “recall” teaches claim 1’s steps for registering a “warranty” for a product. The cited disclosures Abreu describe a process that checks product identifiers of a consumer-purchased product against a Card Central Computers (CCC) database to determine if any of the product identifiers were recalled. See Abreu ¶¶ 189–91. But Abreu does not describe such a process with respect to a “warranty” as claimed, nor does the Examiner provide any persuasive evidence to show that Abreu’s “recall” process teaches registering a “warranty” for a product as claimed. In fact, the only mention of the term “warranty” in Abreu distinguishes the process of registering a warranty from being notified of a recall: “we returned the warranty card over a year ago, when we purchased the stroller, and still were not notified of the recall.” Id. ¶ 21. Appellant’s Specification also distinguishes the process of registering a warranty from that of checking for recalls. See, e.g., Spec. ¶¶ 1, 12, 13, 28, 36. The Examiner further explains that “because Abreu is directed to registering products, it would have been obvious to a person having ordinary Appeal 2019-002444 Application 13/977,293 29 skill in the art that warranty information is provided for large subset of products.” Non-Final 13. But the Examiner does not provide any persuasive evidence to support this assertion. “[T]he [PTO] must make the necessary findings” with “adequate ‘evidentiary basis for its findings’” and articulate logical and rational reasons supporting its decisions. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Ex parte Poisson, Appeal No. 2012-011084, at *5 (PTAB Feb. 27, 2015) (“[A]bsent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the . . . analysis.”). The Examiner adds that “it would be prima facie obvious to substitute the claimed nonfunctional warranty registration service with a different nonfunctional descriptive item and obtain the same outcome.” But, as discussed above, the term “warranty” is functional, and the evidence weighs against the assertion that “warranty” is a simple substitute for the term “recall.” Nor does the Examiner present any findings with respect to Levy, Milovanovic, or Mobil’s SpeedPass, or an obviousness rationale, that cures the deficiencies discussed above. Accordingly, constrained by this record, we decline to sustain the Examiner’s rejection under 35 U.S.C. § 103 of independent claim 1. We also decline to sustain the § 103 rejection of independent claims 11 and 21, each of which recites substantially similar limitations for which the Examiner relies on the same deficient findings and rationale as with claim 1. We likewise decline to sustain the Examiner’s § 103 rejections of dependent claims 2–7, 9, 10, 12–17, 19, 20, and 22–27, for which the Examiner presents no additional findings or rationale that cures the deficiencies in the rejection of independent claims 1, 11, or 21. Appeal 2019-002444 Application 13/977,293 30 CONCLUSION We REVERSE the rejection of claims 1, 11, and 21 under 35 U.S.C. § 112(b). We AFFIRM the rejection of claims 1–7, 9–17, 19–27, 29–33 under 35 U.S.C. § 101. We REVERSE the rejection of claims 1–7, 9–17, 19–27, 29–33 under 35 U.S.C. § 103. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 11, 21 112(b) Indefiniteness 1, 11, 21 1–7, 9–17, 19– 27, 29–33 101 Eligibility 1–7, 9–17, 19– 27, 29–33 1–7, 9–17, 19– 27, 29–33 103 Obviousness 1–7, 9– 17, 19– 27, 29–33 Overall Outcome 1–7, 9–17, 19– 27, 29–33 Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation